Judge to PTO: Faster! Faster! Faster!

MONKEYmedia v. Apple (W.D. Tex. 2011)

In an interesting decision, W.D. Texas Judge Sam Sparks has ordered the USPTO to expedite the reexamination of the patents being asserted in litigation.

The case involves MONKEYmedia's U.S. Patent Nos. 6,393,158, 7,467,218, and 7,890,648 that all relate to seamless expansion and contraction of a multimedia experience. In July 2010, Monkeymedia sued a host of defendants for infringement. The defendants include Apple, Sony, Paramount, Walt Disney, Universal, etc. In December 2010, the defendants of the lawsuit jointly filed ex parte requests for reexamination for two of the patents and then in May, 2011 filed an additional request for the '648 patent that had newly issued.

In the first two cases, the USPTO has issued an initial rejection of the patent claims under reexamination – prompting the defendants to request a stay in the litigation. In a two-page order, Judge Sparks granted a temporary stay of the litigation (Until October 24, 2011).

The surprising ruling from Judge Sparks was an order directed toward the non-party USPTO directing the federal agency to expedite the reexamination of those patents. He writes:

The United States Patent and Trademark Office is ordered to expedite the reexamination of U.S. Patent Nos. 6,393,158, 7,467,218, and 7,890,648 and to advise the Court and the parties in these cases of its results prior to October 24, 2011. . .

[The USPTO] shall provide the results of its reexamination to the parties and the Court before the above date.

In an e-mail, New Hampshire University Law School professor Tom Field suggested that the court read the case of Singer Co. v. P.R. Mallory & Co., 671 F.2d 232 (7th Cir. 1982). In that case, the lower court had ordered the Patent Office to stay its proceedings regarding a particular reissue application. On appeal, the Seventh Circuit held that "enjoining the Patent Office was particularly inappropriate." Judge Sparks' ruling is potentially distinguishable from Singer. Here, Judge Sparks is not attempting to interrupt Patent Office procedure with an injunction, but only to speed-it-up.

Professor Field also points out that the Court should first establish jurisdiction over the PTO before ordering the agency to act.

Notes:

75 thoughts on “Judge to PTO: Faster! Faster! Faster!

  1. 75

    Your example is misplaced, and I am not wrong. The scenario only applies where an ART III court finds a patent NOT invalid, enforceable, infringed and enters a judgment (to keep it interesting let’s say the final judgment includes legal money damages determined by a jury under the 7th amendment) and then a collateral attack on the patent under the guise of reexamination – voids the final judgment of the court after it is entered.

    I suggest you read up on the translogic series of cases. In a nut shell, an art III final judgment which included money damages as MANDATED by the 7th amendment – meets up with a collateral reexamination attack from BOPAI at CAFC – result – 7th amendment damages and ART III final judgment vacated – and reexamination (finding patent invalid) affirmed.

    Some would say that it is axiomatic that congress cannot conjure away the right to a trial under the 7th amendment – but that is exactly what PTO has done with the reexamination statutes. Indeed, reexamination as practiced today is very close to the original Hayburn’s case scenario.

  2. 71

    Lulz, had you have been hanging around and paying attention here on this site you’d know that the avg cost to examine a standard app is 4k+. Patentees that have issued patents subsidize the examination of applications.

    I don’t know what the avg. cost of an inter partes reexam is though. I imagine that it is quite a lot though since the fee is so high.

  3. 70

    If you think the delays caused by reexam are bad, just wait until post grant review becomes a reality.

  4. 69

    “some may think deploying the US Army at the border”

    All other concerns aside, that would seem like the appropriate place to deploy the US army.

  5. 68

    Lulz – googling the info from Paul F. Morgan listed this as one of the hits:

    Growing Pains in the Administrative State: The Patent Office’s Troubled Quest for Mangerial Control[PDF] from pennumbra.com AK Rai – U. Pa. L. Rev., 2008

    How did that work out?

  6. 67

    What is the court supposed to do? Hold Kappos in contempt for not hiring more examiners, congress in contempt for not adequately funding the PTO, the american people in contempt for not electing the right congressmen, where does it stop?

    We’ve had this debate about our borders. What is secure? Not everybody agrees with a definition. Some may think we need moats filled with crocks, some may think deploying the US Army at the border, some think we are doing enough.

    The problem is with the statute by not defining what special dispatch means, or any remedy for a failure of the government’s duty. Without this, perhaps the courts can fashion a remedy of its own, perhaps by not placing the trial on hold and perhaps further by expediting trial so that it is over and done with by the time the PTO has acted.

  7. 66

    My guess is number (2), and that his order arose from somebody wanting to test the waters of the separation of powers doctrine.

    This was my initial thought as well. I don’t recall if it was there originally, but someone saved me the trouble of pulling the briefs and the post now states that neither party requested this part of the order. So it was done sua sponte. Totally bizarre.

  8. 65

    1) The 2.5K fee is more than twice that of an original application, and so should be adequate; and

    2) the reexam fees are set under 35USC41(d) by the PTO Director, not Congress, so as to recover costs.

    If it doesn’t really cover costs, the PTO has authority already to readjust it so that it does cover the costs. The only real problem is that while the PTO can collect the fee, it can’t spend what it collects, as you’ve correctly noted.

  9. 64

    See Federal Circuit Bar Journal
    15 Fed. Cir. B.J. (2005-2006) for a good article on this idea

  10. 63

    Show us an example of a judge or academic citing to one of Ned’s “opinions” left in a comment here.

    Read it slowly this time, Feelings, in light of Ned’s original comment and your comment to Ned.

    Hint: there’s a rather enormous difference between a judge or an academic noting that “many commenters believe so-and-so” (an objectively verifiable fact) and a judge or an academic stating “Nearly every re-exam request that is granted is reasonable on its face (cite: comment by Ned Heller at PatentlyO, July 27).”

    Can you see the difference? I hope that you can. But I also doubt that you will admit it.

  11. 62

    In what theory? 2.5k does not cover a reexam at all and I doubt the 8.8k does either.

    But that doesn’t matter, the PTO has (and would have) enough money if congress would let it spend it.

  12. 61

    Although not relevant to this judges sua sponte “order”, but as to reexamination parties with long delayed PTO reexamination office actions [and willing to properly argue an agency violation of the statutory “special dispatch” requirement?] I note that in other contexts (as to other Federal Agencies) it has been said that: “..increasing numbers of applicants have taken matters into their own hands, by filing petitions for writs of mandamus in federal court .. . to remedy an unreasonable delay in action by an administrative agency.” [Presumably under a provision of the Federal Administrative Proceedures Act?] I wonder if anyone has ever tried it, or if that is something a Judge could order a reexam party that is in a patent suit before him to do in order to get actual jurisdiction over the PTO?
    {Just brainstorming, as this is indeed a facinatingly odd situation.}

  13. 59

    unfortunately there are those in our judiciary and academia who are only to happy to repeat your “opinions” and give such “opinions” untowards weight.

    Show us an example of a judge or academic citing to one of Ned’s “opinions” left in a comment here.

    Or is it just your “feeling” that “our judiciary and academia” behave in this manner?

  14. 58

    Sorry to burst your bubble – but unfortunately there are those in our judiciary and academia who are only to happy to repeat your “opinions” and give such “opinions” untowards weight. Such anecdotal “evidence” tends to become its own source of validation, unless checked. You are baseless in yoru accusation of lack of ggod faith.

    Identifying with more particularity when “an opinion” is less weighty serves both to document when someone is merely blowing smoke (and serves to distinguish mere fancy and idle speculation from heartfelt belief).

    For you to become so riled on such a small matter speaks volumes.

  15. 57

    Wrong — if you get a final judgment of invalidity (let’s say it isn’t appealed), and then 3 months later the USPTO finds the patent invalid in reexam (with all appeals finished), the final judgment is still valid. The USPTO cannot reverse an Article III court. That would be a violation of separation of powers.

    (I’m honestly not sure what happens if the patent is held invalid in reexam while the district court judgment is still on appeal.)

  16. 55

    That’s kind of a worthless statutory provision. You should see the patent office when they aren’t acting with special dispatch — that explains the applications that take 15 years to get through, I guess.

  17. 54

    I have to agree with Ned here. I’m a little sick of people posting here demanding statistics and evidence.

    These are comments to a blog post — not peer-reviewed scientific journal articles or even law review articles. So, please — calm down. We all can understand when a practitioner is posting anecdotes and that maybe not all others are having the same experiences.

    If you want to use statistics to show that what Ned (or any others) is a deviation and not the standard, then by all means, go ahead. That would be very helpful for the community. But unless you want to pay Ned, it isn’t his job to do so for you.

  18. 53

    So given the sorry state of expediency we have come to expect from the Office-error correction devices, let’s have Congress create additional post-grant review processes and add more work to a crew that already is falling farther and farther behind faster and faster.

    Charlie Foxtrot Express.

  19. 52

    I think the PTO should move to quash the order as soon as a US marshal shows up and serves Kappos or one of his minions. The Justice Dept. will have a field day with this one.

    That said, the need for special dispatch is real. The PTO delays have to give the affected parties some relief. I suggest at least a refund of any fees to the requestor; and patent term restoration to the patentee. But this has to be authorized by statute.

    As well, we could have a new statute that mandated that the PTO take action, when the ball is in its court, within a specified, but very short, time period if the patent under reexamination is involved in a lawsuit that is stayed pending reexamination.

  20. 51

    Let’s see.

    I said “I think.” That is my opinion.

    Now, you were within bounds to question the basis for my opinion, but I think, there’s that word again, that you are beginning twist things when you suggested that I made a “statement.” That implies a statement of fact, not opinion.

    I should have suspected from the beginning that your post was not in good faith. I am now certain of it. You are ping.

  21. 50

    So with no stats and maybe a handful of cases from personal experience, you feel OK to make such a broad sweeping generalization?

  22. 49

    In theory, the $2520 fee paid by the reexam requester ($8800 for inter partes) funds the “special dispatch” handling. It’s a good question whether this really covers the PTO’s entire cost.

  23. 48

    The history of judicial activism (as well as the history of charging judicial activism, as an insult – from all camps, both majority and dissent, no matter which way the winds blow) is a tragic comedy.

    The fear that gripped the Court (the loss of respect) from Marbury’s day has been realized, time and again.

  24. 47

    So then… unfunded mandate?

    Congress: Hey guis, plz to be reexamining all these patants that you just issued n do it quick kk?

    PTO: Uhhh… $$$?

  25. 46

    The illegal power grab – is reexamination itself. Sounds like another judge is waking up to the fact that patent judgments are merely advisory opinions – the commissioner has the final say in these matters.

  26. 45

    One might add: especially in a country with a Supreme Court (where as few as five of these un-elected government employees, act as super-checkers/super-balancers/new-law-makers, and do so) self-empowered by Marbury v. Madison, 5 U.S. (1 Cranch) 137 (1803). What a majority may consider as the act of judicial review may in turn be seen by the dissent as judicial activism.

  27. 44

    One more thing. Some data to back up the case that the PTO doesn’t really conduct reexams with “special dispatch”. This is from the PTO as of March 31, 2011:

    Mean pendency (filing to reexam certificate): 25.7 months for ex parte reexams; 36.5 months for inter partes reexams

    Median pendency: 20.0 months for ex parte, 33.0 months for inter partes.

    While that’s slightly better than applications for patent, its still not very good and not likely what Congress intended.

  28. 43

    35 U.S.C. 304
    “All reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office.”

    35 U.S.C. 314(c)
    “SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.”

    The PTO often seems to ignore this part of the patent statute. They appear to interpret it instead as applying to the patent owner (30 days to respond, no extensions of time except for cause, etc) instead of applying to themselves and the time it takes to get their own act together and issue Office actions. No wonder judges get antsy and feel the need to push the PTO to reexamine faster.

  29. 41

    “It is difficult to see any reason why the USPTO should even wish to avoid compliance.”

    Maybe so other courts don’t jump on the bandwagon?

    “the needs” of his court are no more pressing than “the needs” of any other court in the same position. And apparently there are several.

  30. 39

    Is this about the first one not getting Patented in the USA,and then filed in another Country. And the second being ignored and then made invalid so they could have their way with it? And then when they ignored it just sits there unpatented also. But the second like the first one all the Fees are paid also?
    Are you saying I have no recourse until it (the second one) becomes a Patent? What about Kent? What about that? You know the First Trademark was also done. And the Copyrights? What about them?

  31. 37

    I think here the PTO is less forgiving and actually does a good job of not granting requests that rehash old issues.

    Any stats (at all) to backup this feeling?

  32. 36

    One of 3 things is true here–either:

    1) Judge Sparks knows exactly what he is doing and why;

    2) Judge Sparks has an incomplete understanding of what he is doing; or

    3) Judge Sparks has absolutely no idea what he is doing.

    My guess is number (2), and that his order arose from somebody wanting to test the waters of the separation of powers doctrine. This is a very low-stakes case in a low-profile environment, so there is little to lose by floating a trial balloon.

    It might be interesting to see how this all plays out, if we get any details.

  33. 35

    ben the problem appears to be that most requests are examined only for sufficiency of allegations, as a complaint in court is analyzed. If a substantial new question is alleged, that is sufficient it seems to order reexamination.

    Most competent patent attorneys can draft a sufficient request using different art than that considered before. The problems generally come when the same art used before is reasserted in a “new light.” I think here the PTO is less forgiving and actually does a good job of not granting requests that rehash old issues.

  34. 33

    When the PTO grants 95% of requests and a large percentage of that in just a few days of filing it should be obvious to the court that the “substantial new question of patentability” the PTO by law is supposed to use as judge Michel says “is hardly any standard at all”. The courts like E TX should just proceed and leave the PTO wander in the dark.

  35. 32

    A jab at patent examiners? Well, that was a thoughtful and valuable contribution to the discussion at hand. Thank you, Anon. I only hope we’ll be graced with further insights into your vast wisdom.

  36. 30

    have been at least as profound

    Asking nicely (even if including a quote from the Magna Carta) is not sensational enough and would not have caught the attention of this blog, and likely would have resulted in an equally polite declining of the judge’s invitation.

    The administrative agency has already been tasked to handle reexaminations with special dispatch. What you suggest is akin to a parent politely asking their teenager to do a known chore while that teenager continues to ignore the parent.

    The question is whether the relationship between the administrative agency and the court is enough like a child-parent relationship that the court can order the agency to do anything.

    The lesson from Marbury has been missed, and Judge Stark runs the risk of being snubbed without recourse.

  37. 29

    Paul, the text quoted by Dennis includes that the USPTO “is ordered to”. I cannot imagine Robin Jacob handing down a Decision in which “the European Patent Office is ordered to….”. Can you?

    Readers, would not the effect on the USPTO have been at least as profound if Judge Sparks had first quoted Magna Carta and then requested (instead of ordered) the USPTO to expedite its proceedings?

  38. 28

    And I am sure Barack Obama or the US Congress would like their “reasonable needs” to control US Supreme Court once in a while, but that doesn’t happen in a country with a written Constitution ;)

  39. 26

    In Europe there has been a number of instances where the EPO Appeal Boards and the UK national courts have cooperated to have an opposition appeal expedited to clarify the issues in UK infringement and validity proceedings. The cooperation has been on a voluntary basis and since litigation in Europe is relatively rare there has no suggestion that taking isolated cases out of turn has put the EPO or other parties to EPO proceedings to any material disadvantage. Robin Jacob during his time in the Court of Appeal expressed his sppreciation of this cooperation and the value of coordination of this kind.

    Irrespective of whether Judge Sparks has jurisdiction over the USPTO, he has made the needs of his court plain. It is difficult to see any reason why the USPTO should even wish to avoid compliance. It is not altogether clear if the timetable provides for an appeal stage, but it should not be beyond the resources of the USPTO to do the whole job within the timescale set out by the Judge. All that needs to be done is to set a compact timetable and all parties involved to get on with the job. Justice delayed is justice, just like it said in Magna Carta.

  40. 25

    Judge Sam Sparks and US patent law, yes I remember Judge Sparks and some of his more unusual rulings as the trial judge from an earlier patent case: Southwest Software, Inc. v. Harlequin, Inc link to ll.georgetown.edu

  41. 24

    Well, this is trip down memory lane. There I am on the very first petition to withdraw as attorneys of record. So glad I had nothing to do with this application. They said Keith Stephans died in a light plane crash but his body was never recovered. I cling to the conspiracy theory that he squirreled a bunch of money and skipped the country. link to sptimes.com

  42. 23

    I suspect the PTO lawyers are going to have a polite but non-cooperative response to this district judge. And if that doesn’t work, I think a petition for mandamus is likely.

    However, the PTO has a bit of a procedural quandary. It’s not a party in the case, so it could be that the Federal Circuit has no appellate jurisdiction to consider a mandamus petition from the PTO. I’m geeky enough to find this all fascinating.

  43. 22

    Telling a non-party – a government agency, no less – how to do its job? This judge must be an acolyte of Israel’s Aharon (Aaron) Barak, the world’s poster child for judicial activism run amok.

  44. 21

    The allocation of resources within an agency is very much the job of those who have the expertese and experience to make such choices. For a court to take on that allocation function is to over plat its function and to take on the job of administering the agency involved. Sure there are always rare exceptions to this or any rule and even those exceptions usually involve an injunction rather than a command to take action. An injunction rarely affects the allocation of resources. This order is a dangerous deviation from the rule of law as it puts the court in the position of an administrator.

  45. 20

    “Aren’t they all supposed to be expedited anyway? In which case, the order means very little.”

    Except for the whole part about the court possibly holding the PTO in contempt if it doesn’t meet the deadline. Which, as I noted, might result in the hilarious situation of the director going to jail.

  46. 19

    Aren’t they all supposed to be expedited anyway? In which case, the order means very little.

  47. 18

    “How many reexam applications is the director working on?”

    Lulz, doesn’t matter. He’s the one responsible for all of them. We just work for him, helping him out, doing what he wants done.

    Ya re re.

  48. 15

    On the other hand, I was thinking about it, and if more judges did hold the PTO in contempt for either being slow on a reexam or just getting an application done then perhaps congress would get its act together rather than let the director go to jail or whatever.

  49. 14

    Wow; is this legal?

    Can a Fed Court hold the PTO in contempt if they don’t comply?

    Any practical effect if they do?

    Can Mr. Kappos be compelled to explain to the court if they’re late?

    This is going to be interesting …

  50. 13

    “Answering my own question, this order would be proper if it ended with “First!!1!””

    lulz.

  51. 12

    [i]why does this court think it’s special?[/i]

    Answering my own question, this order would be proper if it ended with “First!!1!”

  52. 11

    Putting aside the (dispositive) jurisdictional issue, why does this court think it’s special? If every judge presiding over a case in which a patent has been pulled into reexam issued such an order, the patent office would likely have to be in contempt of a vast number of those orders because it couldn’t possibly comply with all of them simultaneously.

  53. 10

    It is common knowledge that examiners are often held in contempt.

    Now it may be true literally as well.

  54. 9

    Yeah, and after that, he ordered Obama to win the war in Afganistan and withdraw our troops by Christmas.

    Finally, to top it off, he ordered the National Weather Service to stop global warming by July 4, 2012.

    An amazing judge there.

    We need more of his ilk.

  55. 8

    “[The USPTO] shall provide the results of its reexamination to the parties and the Court before the above date.”

    Judge Sparks then proceeded to order the National Park Service to clean up every piece of bear scat in Yellowstone and Yosemite by August 3, 2011.

  56. 7

    “[The USPTO] shall provide the results of its reexamination to the parties and the Court before the above date.”

    Good luck with that. I think the court should mind it’s own fire trucking business.

  57. 6

    “After a bit of reflection, I conclude that for such an order to be proper, the party that wants it should ask for expedited proceedings. Being denied in a *final* determination, it could then seek review under the APA.”

    Indeed, and then it would fail.

  58. 5

    After a bit of reflection, I conclude that for such an order to be proper, the party that wants it should ask for expedited proceedings. Being denied in a *final* determination, it could then seek review under the APA.

  59. 4

    Does the Court have authority / jurisdiction to order or enjoin any non-party — let alone the USPTO?

  60. 3

    The court is trying to interrupt PO procedure with a “speed it up” order that effectively enjoins the PTO from doing whatever other reexams were scheduled to take place during that time. That is, the court effectively grants several injunctions in order to have the office take this one up out of turn. Or, even worse, forcing the executive to act before it is good and well ready. In other words, the court making an illegal power grab.

    That said, this case is distinguishable from the cited case.

    Although the secondary rational used in the cited case is on point.

    ” we note that enjoining the Patent Office was particularly inappropriate.

    “It is well settled that the courts should not interrupt the administrative process except under very limited and exceptional circumstances.” Federal Trade Commission v. Feldman, 532 F.2d 1092, 1095 (7th Cir. 1976).*fn7 This proposition stems from “the long settled rule of judicial administration that no one is entitled to judicial relief for a supposed or threatened injury until the prescribed administrative remedy has been exhausted.” Myers v. Bethlehem Shipbuilding Corp., 303 U.S. 41, 50-51, 58 S. Ct. 459, 463, 82 L. Ed. 638 (1938).”

    This is no exceptional circumstance. The cases they cite even list some types of cases that might be exceptional.

    But beyond that, this appears to be a court usurping the legislatively granted discretion the agency posseses to proceed on its own timeline. And in this case “with special dispatch” or whatever congress said in re reexams.

    Nearly unbelievable. But, I guess we are talking about Texas.

  61. 1

    The case involves MONKEYmedia’s U.S. Patent Nos. 6,393,158, 7,467,218, and 7,890,648 that all relate to seamless expansion and contraction of a multimedia experience.

    Wow, that sounds incredibly cool and exciting. I can’t wait to look at the claims …

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